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Overcoming 2(e)(2) Refusals Involving a County Name

Your client has filed an application for a trademark that includes the name of a county where it has offices – think LEE LAGER for a beer brewed in Lee County, Alabama. It has received a 2(e)(2) refusal from the Office, with the Examining Attorney alleging that the mark is “primarily geographically descriptive” of the goods.

You want to find examples of applicants overcoming this 2(e)(2) refusal where the term is a county. TM TKO can help – let’s find out how.

First, the legal test: to establish that a mark is primarily geographically descriptive under the Lanham Act § 2(e)(2), 15 U.S.C. § 1052(e)(2), one must show that: (1) the primary significance of the mark is a generally known geographic place or location; (2) the goods or services for which the applicant seeks registration originate in the geographic place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (i.e., a services/place association). See TMEP § 1210.01(a).

We want to start with the narrowest set of results that we know are right on point – active registrations that have no disclaimers and are on the Principal Register (all added under “Trademark Criteria”) that faced a 2(e)(2) refusal in prosecution and relate to a “county,” which we specify in the free-text “Content” section. We also specify Incoming responses from applicants to focus just on successful responses. This is just a subset of all relevant responses – there will be many on the Principal Register with a disclaimer of a different term that will also be highly relevant – but this is a great start, and avoids and that were registered only with the term in question disclaimed. Indeed, LEE LAGER would likely disclaim “lager,” indicating how narrow this result set might be.

In TM TKO, this search query looks like:

The search identifies more than 196 documents meeting this very limited fact pattern.

The preview text lets you quickly triage for the closest factual matches. YUECHI, the first result, focuses on a small foreign county, in China; it’s less likely to be a direct comparable than an American county. A couple of results further down, we have an Office Action Response for the mark ESSEX for electronic mounting racks. This is exactly what we are looking for – a mark related to a US county. The applicant successfully argued that the term has the geographic meaning that the Examiner suggested – a county in New Jersey – but that (a) the county is in no way renowned for the goods, and that (b) it is non-specific, identifying multiple potential locations. The evidence provided in connection with the response provides an excellent guide to pulling together convincing evidence to support our response.

Just further down, a response for an application for NESHOBA for crape myrtles successfully overcomes its 2(e)(2) refusal. While “Neshoba” is a small county in Mississippi, a state in which the applicant, Mississippi State University, is also located, the applicant successfully argued that the county name is not widely known to plant purchasers (or consumers in general), that consumers would not recognize it as a place at all, much less make any sort of association of a goods/place relationship.

If we drop the “disclaimer” limiter, one of our first results is a registration for LACKAWANNA BREWING – a county in Pennsylvania, and directly analogous to our fact pattern. It disclaims “brewing,” which is fine and comparable to disclaiming LAGER in our example. The applicant successfully argued that its beer was actually produced at the Lackawanna Terminal in Hoboken, NJ, rather than in Lackawanna County – a secondary meaning, and not the primary meaning the public would expect under part (1) of the Section 2(e)(2) test. Given the number of Lee Counties nationwide – twelve, from some quick research – this might be a good argument for our hypothetical mark, too. Scrolling a bit further down our list, we see similar successful arguments overcoming a refusal for HUDSON PALE ALE. That response also added arguments that HUDSON could be perceived as a surname or a geographic identifier, weakening the “primary” significance of either; that same argument could apply to “Lee,” too.

In just a few minutes, we’ve found successful arguments and sample evidence to help guide our response, plus examples of other refusals that were withdrawn by Examiners on highly similar evidence that we can point to as support – even several within the same industry, without even trying to narrow by class or goods. If you need to argue against a 2(e)(2) refusal or a comparable substantive issue, some quick Office Action research in TM TKO can help get you off to a quick start and a successful conclusion.